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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Orion Gaming B.V., WMS Gaming Inc. v. Roberto Colombo Gianni

Case No. D2009-1515

1. The Parties

The Complainants are Orion Gaming B.V. of Bergen op Zoom, Netherlands and WMS Gaming Inc. of Waukegan, Illinois, United States of America internally represented.

The Respondent is Roberto Colombo Gianni of Lima, Peru.

2. The Domain Name and Registrar

The Domain Name <oriongaming.net> is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 9, 2009. On November 10, 2009, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed Domain Name. On November 12, 2009, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on December 8, 2009.

The Center appointed Luca Barbero as the sole panelist in this matter on December 15, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainants are Orion Gaming B.V. (hereinafter "Orion"), a company incorporated under the laws of the Netherlands, which manufactures and sales slot machines and related goods since 1995, and WMS Gaming Inc. (hereinafter "WMS"), a company incorporated under the laws of the State of Delaware.

The Complainants inform the Panel that, following Orion`s acquisition by a joint parent company of Orion and WMS in 2006, the trademark rights on the sign ORION GAMING were assigned to WMS, that subsequently licensed the trademarks back to Orion for Orion`s continued use in connection with its products and services.

WMS is therefore the owner of the Benelux trademark registration no. 0760708 for ORION GAMING registered on December 8, 2004, in classes 9, 28, 35 and of the International trademark registration no. 865879 for ORION GAMING registered on February 11, 2005 in classes 9, 28, 35.

The Complainants are also the owners of the domain name <oriongaming.com> registered on March 2, 2000 in the name of Orion.

The Respondent registered the Domain Name <oriongaming.net> on March 16, 2006.

5. Parties` Contentions

A. Complainants

The Complainants point out that, in light of the amount of investments in advertising and sales in many countries, the trademark ORION GAMING has reached a substantial goodwill worldwide.

The Complainants contend that Domain Name <oriongaming.net> is substantially identical to trademarks and domain names in which Complainants have rights as it reproduces the well-known trademark ORION GAMING in its entirety, differing only by deletion of the space between the terms "orion" and "gaming" and by addition of the ".net" gTLD.

With reference to rights or legitimate interests in respect of the Domain Name, the Complainants state that the Respondent has no connection or affiliation with the Complainants, nor has it received any express or implied license or authorization to use the ORION GAMING marks in any manner.

The Complainants contend that the Domain Name redirects Internet users to a Spanish-language web site displaying, without any authorization, the graphical representation of the mark ORION GAMING of the Complainants and offering unspecified products and services, therefore infringing the Complainants` trademark rights and attempting to attract Internet users to the Respondent`s web site.

The Complainants also underline that the Respondent has not used the trademark ORION GAMING in connection with any offer of goods or services prior to Orion`s first use of its trademark in 1995.

With reference to the circumstances evidencing bad faith in the registration and use of the Domain Name, the Complainants indicate that, in light of the fame of the trademark ORION GAMING, the Respondent was certainly aware of the Complainants` trademark rights. The Complainants highlight that the Respondent`s knowledge of Orion`s rights is evidenced by the Respondent`s use of Orion`s corporate logo on the web site corresponding to the disputed Domain Name.

The Complainants also inform the Panel that a cease and desist letter was addressed by them to the Respondent via overnight courier, e-mail and via fax, advising the Respondent on the Complainants` trademark rights and requesting the transfer of the Domain Name, but the letter never reached the Respondent via overnight courier or fax because the physical address and fax number were false.

B. Respondent

The Respondent did not reply to the Complainants` contentions and is in default.

Therefore the Panel shall decide this proceeding on the basis of the Complainants` submissions, drawing such inferences from the Respondent`s default that are considered appropriate according to paragraph 14(b) of the Rules.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Domain Name Identical or Confusingly Similar

The Complainants have provided evidence of ownership of the Benelux trademark registration no. 0760708 for ORION GAMING, registered on December 8, 2004, in classes 9, 28, 35 and of the International trademark registration no. 865879 for ORION GAMING, registered on February 11, 2005 in classes 9, 28, 35.

The Panel finds that the Domain Name is therefore identical to the trademark owned by the Complainants.

In comparing the Complainants` marks to the Domain Name with reference to ORION GAMING, it should be taken into account the well-established principle that the generic top level domain may be excluded from consideration as being merely functional component of a domain name. See e.g. Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 "the specific top level of the domain name such as ‘.net` or ‘.com` does not affect the domain name for the purpose of determining whether it is identical or confusingly similar"; Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 "the accused domain name <chevychasebank.org> is legally identical to Complainant`s trade name CHEVY CHASE BANK".

In view of the above, the Panel finds that the Complainants have proven that the Domain Name is identical to the trademarks in which the Complainants have rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainants must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

It is well-established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent`s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with the UDRP precedents, it is sufficient that the Complainants show a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).

In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainants`prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.

The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainants. The Respondent is not a licensee of the Complainants, nor has the Respondent otherwise obtained an authorization to use the Complainants` trademarks.

Furthermore, there is no indication before the Panel that the Respondent is commonly known by the Domain Name, has made preparations to use the Domain Name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the Domain Name.

The Domain Name is in fact currently pointing to a web site in Spanish language apparently dedicated to promote the activity of a company named "Orion Gaming Eirl", but no information is available on the web site about the company`s activity and products; Internet users are invited to send an e- mail to "[…]@oriongaming.net" in order to know details about the products offered. On the web site corresponding to the Domain Name it is also displayed the sign ORION GAMING, identical in its graphical representation to the mark ORION GAMING used by the Complainants and reproduced on the Complainants` web site at "www.oriongaming.com".

In light of the above, it is apparent to the Panel that such a use by the Respondent does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the Domain Name without intent to divert consumers for commercial gain.

Moreover, it has been repeatedly stated that when a respondent does not avail itself of its right to respond to a complaint, it can be assumed that respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).

Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder`s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder`s website or other online location, by creating a likelihood of confusion with the complainant`s mark as to the source, sponsorship, affiliation, or endorsement of the holder`s website or location or of a product or service on the holder`s website or location.

As to bad faith at the time of the registration, the Panel notes that, in light of the use of the trademark ORION GAMING since 1995, the amount of advertising and sales of the Complainants` products worldwide, including South America and Peru, where the Respondent is based, and also in view of the publication of the Complainants` mark on the website corresponding to the disputed Domain Name, the Respondent was, more likely than not, aware of the Complainants` trademarks at the time of registration of the disputed Domain Name.

The Panel shares the view of a number of panel findings of "opportunistic bad faith" in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O`Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103.

As mentioned in the factual section, the Respondent has reproduced the Complainants` logo and lettering of the trademark ORION GAMING and published it at the online location corresponding to <oriongaming.net>. With reference to the use of a domain name to generate confusion with competing activities, see e.g. Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 ("registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy."); NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 ("Respondent`s registration and continued use of the contested Domain Name for re-directing Internet users, i.e., particularly customers and potential customers of the Complainant, from the Complainant`s website to the web site of Bestnet, Inc., a company which directly competes with the Complainant, constitutes bad faith and use."); Marriott International, Inc. v. Vladimir Kyznetsov, NAF Claim No. FA95648 (bad faith where respondent registered the Domain Name <marriottrewards.com> and used it to route Internet traffic to another website that "promotes travel and hotel services . . . identical to the services offered by the Complainant").

The Panel therefore finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainants` mark as to the source, sponsorship, affiliation or endorsement of the Respondent`s services.

As an additional circumstance evidencing bad faith, the Panel notes that there has been no Response and in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146 "it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith".

Along the same lines is the decision Renegade LLC v. Kenneth Gibert, WIPO Case No. D2008-0646, in which the panel stated: "The Complainant argues that the Domain Names were registered and used in bad faith to divert Internet users to the Respondent`s website for commercial gain based on confusion with the Complainant`s mark. Again, the Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Names in good faith".

Furthermore, the Panel considers the false information originally provided by the Respondent on the WhoIs database as an additional indication of the bad faith of the Respondent concurring with the views expressed inter alia in Steelcase Development Corporation v. Admin, Domain, WIPO Case No. D2005-1352 stating that the use of false contact information by the respondent is a further indication of bad faith (Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775). See along these lines Sãd-Chemie AG v. tonsil.com, WIPO Case No. D2000-0376, finding bad faith use and registration where the complainant "was unsuccessful in its attempt to contact Respondent by using the contact details in the Registrar`s registry".

In view of the above, the Panel finds that the Domain Name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <oriongaming.net>, be transferred to Orion Gaming B.V.

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Luca Barbero
Sole Panelist

Dated: December 29, 2009